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`Paper No. 24
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INC.,
`Petitioner
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`BANDSPEED, INC.,
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`Patent Owner
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`Case IPR2015-00314‘
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`U.S. Patent 7,477,624 B2
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`PETITIONER’S REPLY TO PATENT OWNER’S OBJECTIONS TO
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`EVIDENCE SUBMITTED WITH PETITIONER’S PETITION
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`1 Case IPR2015-01577 has been joined with this proceeding.
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`Petitioner respectfully submits this its reply to Patent Owner’s Objections to
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`Evidence Submitted with Petitioner’s Petition entered on November 23, 2015
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`(Paper 23) (“Objections”).
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`Petitioner understands that the Patent Trial and Appeal Board (“PTAB”)
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`generally prefers evidentiary objections and responses not be filed with the PTAB.
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`See, e.g., Sealed Air Corporation v. Pregis Innovative Packaging, Inc. IPR20l3-
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`00554, Paper 16.
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`It is unclear whether Patent Owner is seeking particular relief at
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`this time beyond its stated objections. For example, given that Patent Owner’s
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`objections are untimely, Patent Owner’s objections may seek to raise rule
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`interpretation issues. Accordingly, Petitioner files this paper with the PTAB out of
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`an abundance of caution.
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`Petitioner will meet and confer with Patent Owner and seek to independently
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`resolve the issues discussed below with opposing counsel. Should those efforts be
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`unsuccessful, Petitioner will seek a conference call with the PTAB regarding any
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`remaining issues requiring the PTAB’s intervention.
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`I.
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`PATENT OWNER’S OBJECTION S ARE UNTIMELY
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`The original petition in this trial was the vehicle that submitted Exhibits
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`1008-1013 and 1016 into the record, which are the subject of Patent Owner’s
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`objections. The present
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`trial was instituted on June 11, 2015.
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`37 C.F.R. §
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`42.64(b)(1) requires that objections to evidence submitted in an IPR petition must
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`-1-
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`be made within 10 business days of the institution of the trial. Prior to November
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`23, 2015, however, Patent Owner failed to object to these Exhibits.
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`The PTAB granted joinder on November 16, 2015, based on a petition that
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`relied solely on the evidence already of record and did not add any new exhibits to
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`this proceeding.
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`In such joinder circumstances, allowing objections to evidence
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`that has been of record for months in a proceeding without objection would
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`unfairly prejudice the parties to an original petition and provide a Patent Owner a
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`second, unwarranted opportunity to object
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`to evidence.
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`Similarly, allowing
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`untimely objections would prejudice a joining party and unnecessarily burden the
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`PTAB. Specifically, if a timely and proper objection was raised, a joining party
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`would have the opportunity to address such objections at the time of filing its
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`petition.
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`Accordingly, Petitioner submits that the rules cannot be construed to allow
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`objections to evidence that is already of record in a proceeding merely because a
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`joinder petition was instituted, and the PTAB should not recognize joinder as a
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`new opportunity to object to evidence of record. Accordingly, Patent Owner
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`submits that the Patent Owner’s objections are untimely and waived.
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`II.
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`PATENT OWNER’S OBJECTIONS DO NOT COMPLY WITH 37
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`C.F.R § 42.64(B)(1)
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`Rule 42.54(b)(l)
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`requires
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`that objections be made with sufficient
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`particularity to allow for correction in the form of supplemental evidence. The
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`-2-
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`present objections fail to comply with this requirement and instead are made in
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`“laundry list” form without any specificity.
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`The evidence objected to includes one or more of: excerpts from prosecution
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`history, dictionary definitions (where the dictionary cited includes copies of the
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`front cover, publication information, and page with the definition), and a Bluetooth
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`Special Interest Group published standards document. Patent Owner asserts a
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`boilerplate objection that m of these documents
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`are (i) not properly
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`authenticated under Fed. R. Evid. 901, (ii) hearsay under Fed. R. Evid. 801-802,
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`(iii) irrelevant under Fed. R. Evid. 402, and (iv—1) unduly prejudicial, (iv-2)
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`confusing the
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`issues,
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`(iv-3) misleading,
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`and (iv~4) needlessly presenting
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`cumulative evidence under Fed. R. Evid. 403.
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`The boiler plate objections are facially deficient and prevent Petitioner from
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`being able to determine the true substance of Patent Owner’s objections and, to the
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`extent necessary, any appropriate supplementation by Petitioner. For example, Pa-
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`tent Owner argues that an excerpt of the reexamination prosecution history of a re-
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`lated patent having the same specification and many similar claim limitations is
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`“irrelevant.” Similarly, Patent Owner argues that self-authenticating documents
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`are not authenticated, and questions the authenticity of documents that have been
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`cited to Patent Owner in related USPTO proceedings. Further, Patent Owner ar-
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`gues that certain exhibits are cumulative, without explaining as to what, and that
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`-3-
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`certain documents are hearsay despite falling within exceptions to the Hearsay
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`Rule. Thus, Patent Owner’s objections fail to provide the required sufficient par-
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`ticularity and should be overruled for this reason.
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`To the extent Patent Owner’s objections are not waived and Patent Owner
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`presents meaningful particularly during the Parties’ meet and confer efforts, Peti-
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`tioner is prepared to make documents available for inspection, provide declaration
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`evidence stating that true and correct copies have been provided, and make other
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`reasonable efforts to resolve the objections without PTAB intervention.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner asserts that the present objections to
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`evidence are untimely and improper.
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`Therefore,
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`if the PTAB is eventually
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`required to address these objections, the objections should be overruled.
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`Dated: December3,20l5
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`Respec
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`l
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`' ed,
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`Nathan J. Rees (Reg. No. 63,820)
`NORTON ROSE FULBRJGHT US LLP
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`2200 Ross Avenue, Suite 3600
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`Dallas, Texas 75201-7932
`Tel: 214.855.7164
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`Fax: 214.855.8200
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`nate.rees@nortonrosefulbrightcom
`Attorney for Petitioner
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`
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`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e) and 37 C.F.R. § 42.l05(a), the undersigned
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`certifies that on December 3, 2015, a complete copy of Petitioner’s Reply to Patent
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`Owne1"s Objections to Evidence Submitted with Petitioner’s Petition (“Reply”)
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`was electronically served on the Patent Owner.
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`LEAD COUNSEL
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`BACK—UP COUNSEL
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`Gregory S. Donahue
`gdonahue@dpelaw.corn
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`David O. Simmons
`dsimmons1@sbcglobal.net
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`Nathan Rees
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`Attorney for Petitioner
`Registration No. 63,820
`NORTON ROSE FULBRIGHT US LLP
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`2200 Ross Avenue, Suite 3600
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`Dallas, Texas 75201-7932
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`(214) 855-7164